WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Tchibo Frisch-Röst-Kaffee GmbH v. Hans Reischl

Case No. D2001-0079

 

1. The Parties

The Complainant is Tchibo Frisch-Röst-Kaffee GmbH, a corporation organized under the laws of Germany, with its principal place of business at Überseering 18, 22297 Hamburg, Germany.

The Respondent is Hans Reischl, with address at Franz Schoepfergasse 37a, 8570 Voitsberg, Austria.

2. The Domain Name and Registrar

The domain name at issue is <tschibo.com> (the "domain name"). The Registrar is Domain Bank, Inc., 23 West 4th Street, Bethlehem, PA 18015-1603, USA.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") by e-mail on January 16, 2001 and in hardcopy on January 18, 2001. The Center acknowledged receipt of the Complaint on January 23, 2001.

On January 23, 2001, the Center also sent to the Registrar a request for verification of registration data. On January 24, 2001, the Registrar confirmed: 1) that Reischl is the current registrant of <tschibo.com>; 2) that the Registrantís address is Franz Schoepfergasse 37a, 8570 Voitsberg, Austria; 3) that the Administrative, Technical and Zone Contact is Hans Reischl, Franz Schoepfergasse 37a, 8570 Voitsberg, Austria, e-mail: office@pink-panther.at; 4) that the Uniform Domain Name Dispute Resolution Policy applies to the domain name; and 5) that the domain name is currently in active status.

On January 25, 2001, the Center notified the Complainant of a formal deficiency with Section VIII, paragraph 15 of the Complaint and requested the Complainant to file an amendment. The Center received an amended Complaint by e-mail on January 30, 2001 and in hardcopy on February 5, 2001.

On February 6, 2001, the Center verified that the Complainant had complied with all formal requirements, including payment of the fee.

On February 6, 2001, the Center also forwarded the Complaint to the Respondent by post/courier, fax and e-mail, with copies to ICANN and to the Registrar. The Center formally notified the Respondent that the Complaint satisfied the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules"); that payment of the required sum had been made by the Complainant; and that an administrative proceeding had been commenced against the Respondent. A deadline of February 25, 2001 was fixed for the Response.

The Response was filed timely by e-mail on February 23, 2001. A hardcopy of the Response was not received by the Center.

On February 26, 2001, the Center acknowledged receipt of the Respondentís e-mail communication and forwarded the Response by e-mail to the Complainant.

On March 9, 2001, the Center notified the Parties that an Administrative Panel composed of a single member, Dr. Kamen Troller, had been appointed and that the Panelist had duly submitted a Statement of Acceptance and Declaration of Impartiality and Independence to the Center. Absent exceptional circumstances, the Panelist was required to forward its decision to the Center in accordance with Paragraph 15 of the Rules by March 22, 2001.

The Panelist examined all notifications of the Center, and the Complaint, and finds that they comply with the formal requirements of the Rules and Supplemental Rules, and that the Administrative Panel was properly constituted.

The Panelist examined the Response and finds that it does not comply with Paragraph 5(b) of the Rules. This deficiency is discussed in Section 6.

 

4. Factual Background

A. The Complainant

The Complainant is a large and well-known coffee producer and retailer organized under the laws of Germany. The Complainant owns International Trademark Registration No. 512823 "Tchibo" (the "Trademark") in international classes 29, 30, 32, 33 and 34, for Germany, Austria, Benelux, Spain, France, Hungary, Italy, Liechtenstein, Romania, Switzerland, Czechoslovakia and Yugoslavia (Complainantís Exhibit B). The Complainant also asserts that it owns other trademark registrations containing the term "tchibo", but has not submitted any documentary proof thereof. The Complainant asserts that it has been using the Trademark in trade for many years.

The Complainant operates websites at www.tchibo.de and www.tchibo.org, where it offers coffee as well as non-food products for sale. The Panel searched on the NSI WHOIS information and found that the domain names <tchibo.com> and <tchibo.net> are owned by ICL, Inc. and Multi Media Haus, respectively. Both companies have the same business address as the Complainant.

B. The Respondent

The Respondent is Hans Reischl whose address is Franz Schoepfergasse 37a, 8570 Voitsberg, Austria. The WHOIS information for the domain name lists Reischl as the Registrant, and Hans Reischl as the Administrative, Technical and Zone Contact. His e-mail address is: office@pink-panther.at. The Response is not signed by Mr. Reischl. Instead it is filed on behalf of an advertising & marketing agency known as "Pink Panther" whose e-mail address is: office@pink-panther.at.

The domain name <tschibo.com> was registered on February 13, 2000.

The Respondent has not alleged that he registered "tschibo" or "tschibo.com" as a trademark in any jurisdiction.

A. Facts Underlying the Dispute

The Complainant contends that after learning that the Respondent had registered the disputed domain name with the Registrar, it sent a letter to the Respondent on May 19, 2000 demanding that the Respondent consent to the cancellation of the domain name. A copy of this letter was not provided. The Complainant states that at the time when this letter was written the Respondentís website contained no content. The Complainant also asserts that the Respondent did not respond to this letter. The Respondent denies ever receiving such a letter from the Complainant.

The Complainant further asserts that on December 14, 2000, it found out that the website www.tschibo.com was altered and contained links to the following websites (Complainantís Exhibit D, sine datu):

- www.computerhaus.net

- www.euro-city.cc

- www.euro-shop.cc

- www.webby.at.

The Respondent states that the above links were placed on its homepage by its service provider, and that "for reasons of safety" its homepage was "locked" until it could clarify the situation with the Complainant.

 

5. Partiesí Contentions

A. The Complainant

The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy are applicable to the disputed domain name. More precisely, the Complainant submits that:

  1. the domain name <tschibo.com> is confusingly similar to the trademark "tchibo" in which the Complainant has rights. The Complainant asserts that a top level designation such as ".com" or ".de" does not contribute to any relevant difference between a trademark and a domain name, and that the designations "tschibo" and "tchibo" differ merely in the missing "s" in the trademark. The Complainant submits that the terms are confusingly similar with respect to the "style of their script", and that (in German) they are pronounced identically;
  2. the Respondent has no rights or legitimate interests in the domain name; and
  3. the domain name was registered and is being used in bad faith, because the Respondent wants to take advantage of the fact that "tchibo" and "tschibo" are pronounced identically. The Complainant argues that, "if one looks for the Complainant on the Internet and types its name how it is pronounced or just adds the ísí as a mistake, he will enter the domain of the Respondent. On this website, the Internet users cannot find the Complainant but [will find] links to other companies offering and selling goods on the Internet as well as the Complainant. The Respondent uses its domain name to attract Internet users to its website by creating a likelihood of confusion with the Complainantís Trademark Ė all for commercial gain".

The Complainant requests the Administrative Panel to issue a decision that the domain name be transferred to the Complainant.

B. The Respondent

In principal part, the Respondentís Answer reads as follows:

"TREND SCHI BOARD Event Agency

1. Owner: Hans Reischl; Company: Advertising-Agency/Marketing-Agency;

2. Product-Event-Platform;

3. Draft: Announcement and promotion of events and trend sports as well as representation for "new" products and pretest of products and sponsors;

4. Different spelling "s" comparable house and mouse (deviation -> 1 letter);

5. No food-selling;

[Response to] Tchibo arguments

1. Unfortunately we never received a letter;

2. Phonetics (words, similar pronounced or with a similar sound - with a different meaning / as well in different languages);

3. Trademark protection (Event-Agency);

4. Make use of the popularity of Tchibo (insignificant concerning this target group Tchibo in connection with fun- and extreme sports?);

4. [sic] We do not represent the same target group Referring to the accusation that our homepage offers links to other companies (is/was the starting page of our provider);

5. For reasons of safety our homepage was locked until clarifying with Tchibo;

6. No impediment, because Tchibo is holder of www.tchibo.com,de.at <http://www.tchibo.com,de.at>;

7. Logo or typography are comparable in no way, therefore no risk of mixing-up, because the logo of our company differs completely compared to the Tchibo logo;

We consider to be discriminated as a smaller company. Alternatively there is a possibility for "Tchibo" of adjustment of a link in our homepage.

Best regards"

 

6. Discussion and Findings

A. Procedural Matters

The Panel finds that the Response has not complied with Paragraph 5(b) of the Rules for the following reasons: (i) it does not respond specifically to the statements and allegations contained in the Complaint, but instead provides a non-structured and difficult to comprehend list of arguments; (ii) it is somewhat unclear with respect to the name of the Respondent (domain name holder) and the Authorized Representative for Respondent; (iii) it was not submitted to the Center in hardcopy; (iv) it does not specify the preferred method for communications; (v) it does not state that a copy of the response has been sent or transmitted to the Complainant; and (vi) it does not conclude with the statement required by Paragraph 5(b)(viii) of the Rules.

However, the Rules give the Panel considerable discretion. The Panel notes that it has an obligation to ensure that each party is given a fair opportunity to present its case (Rule 10(b)), and that it has the discretion to determine the admissibility of the evidence (Rule 10(c)).

Mindful of the fact that the Respondent was apparently not assisted by counsel, and intent upon assuring that each party is given a fair opportunity to present its case, the Panel has decided to accept all submissions.

B. Substantive Matters

Pursuant to paragraph 4(a), the Complainant must prove that each of the following three elements are present:

(i) the Respondentís domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and

(iii) the domain name has been registered and is being used in bad faith.

(a) Identical or confusingly similar

The Complainant asserts that the domain name <tschibo.com> is identical or confusingly similar to the trademark "tchibo". The Respondent denies this allegation, arguing that the terms differ phonetically, and in meaning and language, and that its website is not used to sell food.

In the assessment of whether a domain name and a trademark are confusingly similar, all relevant circumstances must be taken into account, in particular, the degree of aural, visual, or conceptual similarity between both terms, the similarity of the goods or services they are used for, and the distinctiveness the trademark has either per se or by virtue of the markís recognition.

The Panel finds that the domain name and the Trademark are confusingly similar, based upon the following factors:

- in the German language, and in many other languages, both terms are phonetically identical;

- the only visual differences between the domain name and the Trademark are: (1) the letter "s" is added in the domain name; and (2) the domain name has ".com" at the end. Such differences are minor and do nothing to cause any real distinction between Complainantís Trademark and Respondentís domain name(Footnote 1);

- "tchibo" is a well-known and distinctive trademark that has obtained a strong level of protection.

The Panel is however aware that there is a semantic difference between the domain name and the Trademark: "Tschibo" is allegedly derived from the name of the "event agency" "Trend Schi Board". "Tchibo", on the contrary, does not have any specific meaning of which the Panel is aware;

With respect to the Respondentís argument that the domain name and the Trademark are not confusingly similar because the names are used in conjunction with different goods or services, the Panel finds that it is premature to reach this conclusion at this point in time, because it appears that the domain name has not (yet) been used in connection with the offering of goods or services, and certainly not in conjunction with trend or extreme sports. Still, the Panel notes that the Complainantís Trademark is not only used for coffee (the product for which the Complainant and its Trademark are best known), but also for non-food products, such as: clothes, audio-system products, cigars, bikes and bike equipment, thermometers, umbrellas, multimedia and computer equipment and travel.

Considering these circumstances, the Panel concludes that the domain name is confusingly similar to a trademark in which the Complainant has rights.

(b) Rights or legitimate interests

Paragraph 4(c) of the Policy defines the circumstances required for the Respondent to demonstrate "rights to and a legitimate interest in the domain name". The Respondent is only required to demonstrate any one of the following circumstances (in particular and without limitation) to prove its rights to or legitimate interest in the domain name:

(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The Respondent has made the task of the Panel extremely difficult by filing a Response that is both vague and not in conformity with the Rules. With respect to paragraph 4(c)(i) of the Policy (commercial use), the Respondent does not allege nor submit credible evidence that the domain name, or a corresponding name, has ever been used in connection with a bona fide offering of goods or services. The Respondent does suggest that the website is to be used for the (apparently commercial) "representation" of Ďnewí products, and the Respondent does submit evidence of demonstrable preparations to use the domain name in the form of a logo apparently to be used in conjunction with the website. The Respondent has however failed to provide any evidence that the logo was conceived before this arbitration was commenced, and has offered no evidence of demonstrable preparation to use the website prior to the commencement of this arbitration. Based on these considerations, the Respondent has failed to satisfy the conditions of sub-paragraph (i).

With respect to paragraph 4(c)(ii), no credible evidence has been offered that the Respondent has acquired trademark rights in the domain name or has been commonly known by the domain name. The Respondent asserts that he owns an event agency named "Trend Schi Board", and that this name is trademark protected. No evidence has been provided to substantiate the Respondentís claims that such an agency exists or that such trademarks exist. Such rights or legitimate interests in the trade name or trademark "Trend Schi Board" do not sufficiently establish Respondentís rights or legitimate interests in the domain name <tschibo.com>. The Respondent has therefore failed to satisfy the requirements of sub-paragraph (ii).

With respect to paragraph 4(c)(iii), (non-commercial use) the Respondent claims that his goal is the "announcement and promotion of events and trend sports as well as representation for Ďnewí products and pretest of products and sponsors". Thus, the domain name used for the website could refer to the event agency "Trend Schi Board" which arguably has the non-commercial goal of publicizing extreme sporting events. The Panel accepts that this could be a plausible legitimate interest provided that the Respondent were making such a legitimate non-commercial or fair use of the domain name. No evidence has however been provided that would establish that the Respondent has actually used the domain name for the purposes presented. As a result, the Respondent has failed to satisfy the requirements of sub-paragraph (iii) of this provision.

The Panel concludes that the Respondent has no rights or legitimate interests in the domain name.

(c) Bad faith

Paragraph 4(a)(iii) of the Policy requires the Complainant to prove use in bad faith as well as registration in bad faith.

Paragraph 4(b) of the Policy sets forth a non-exclusive list of circumstances which shall be evidence that the registration and use of a domain name is in bad faith:

(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainantís mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your web site or location.

The Complainant relies on the forth element, alleging that the domain name was registered and used in bad faith because the Respondent is attempting to attract Internet users to its website by creating a likelihood of confusion with the Complainantís Trademark for commercial gain. The Complainant contends that: "If one looks for the Complainant on the Internet and types its name how it is pronounced or just adds the "s" as a mistake ["typo-squatting"], he will enter the domain of the Respondent. On this website, the Internet users cannot find the Complainant but [will find] links to other companies offering and selling goods on the InternetÖ".

The Respondent rebuts the allegation that its homepage offered links to other companies by stating that these links were placed on its homepage by its service provider ("is/was the starting page of our provider"). The Panel observes that this phenomenon does occur with certain "parked" websites. The Panel further observes that the Complainant has failed to prove that the Respondent has acted for commercial gain. In fact, the evidence appears to support the opposite conclusion. Once notified (through the Complaint) that the links posed potential for confusion, the links were removed and the site locked.

Had the Complainant been able to demonstrate that these links were placed on the homepage by the Respondent for commercial gain, its effort to prove bad faith might have met with a second objection concerning the likelihood of confusion.

The Panel conducted a search on the Internet and found widespread use of the term "Tschibo" in various domain names. For example, the domain names <tschibo.net> and <tschibo.tv> are registered by third parties. An Internet search using the word "tschibo" also gave rise to a great number of hits, which relate to a great variety of subjects including:

- Tschiboís homepage: www.fortunecity.de/village/christopher/6/index2.htm;

- Tschibo, operated at http://tschibo.kommunikationsinformatik.de;

- Newsgate: de.sci.astronomie: Re: Nach dem Tschibo: www.mailgate.org/index.html;

- Giga-PC von Tschibo: www.senioren-zentrale.de/journal/show.shtml?331;

- Tschiboís index: www.tschibo.net;

- Tschiboí Bildergalerie: www.tschibo.net/m_gal.htm; and

- tschibo: homepage.swissonline.ch/tschibo.

The Panel is aware that the Complainant is selling many products on its website, including sports, computer and travel-related products. The Panel is also aware that the Respondent has made little use of its website, raising certain doubts about the Respondentís real intentions. Furthermore, the evidence offered by the Respondent to rebut the allegation of bad faith has not been particularly compelling. It is the Complainant however that has the burden of establishing a prima facie case, a demonstration that it has failed to make.

Given the widespread use on the Internet of the name Tschibo, it is difficult to see how the registration of the domain name <tschibo.com> for the promotion of trend and extreme sports could be "misleading" in its diversion of consumers to Respondentís website, provided that the Respondentís website is not used for the sale or promotion of coffee or other products notoriously competitive with the Complainantís well-known mark. Simply put, while the Tchibo mark is well-known and well-protected, the Tchibo name is hardly unique in the German speaking world, and is being used in several other contexts.

Given the wide recognition of Complainantís trademark, it is certainly plausible that Respondent will enjoy some advantage from the reputation of the Complainantís Trademark. However, there is nothing inherently wrong with that. As long as the Respondent does not intentionally create confusion to attract, for commercial gain, Internet users to his website, such an advantage cannot be considered to be unfair or parasitic, and does not constitute bad faith per se.

Based on the above, the Panel finds that the Complainant has failed to satisfy its burden to prove bad faith.

Had the Complainant been able to demonstrate that the links were placed on the homepage by the Respondent for commercial gain, its effort to prove bad faith might have met with a second objection concerning the likelihood of confusion. Had the Complainant been able to demonstrate that the Respondent failed to use this site within a reasonable period of time, or had the Complainant provided information or market products that did not fall within the scope of "trend sports" or extreme sports, then this might have been an indication of bad faith. At this point in time, all that can be said is that the Complainant's claim appears premature.

 

7. Decision

The Panel decides that, the domain name <tschibo.com> is confusingly similar to the trademark "tchibo"; that the Respondent has no rights or legitimate interests in respect of the domain name, but that the Complainant has failed to demonstrate that the domain name was registered and is being used in bad faith by the Respondent.

Pursuant to paragraphs 4(i) of the Policy and 15 of the Rules, the Panel requires that the domain name be left as it stands.

 


 

Kamen Troller
Sole Panelist

Dated: March 20, 2001

 


 

Footnote:

1. See also: The Journal Newspapers Inc. v. DomainForSale 980dollars (FA95395).